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RULES
AND REGULATIONS
ON
SETTLEMENT
OF DISPUTES INVOLVING
TECHNOLOGY
TRANSFER
PAYMENTS AND
THE
TERMS OF
A LICENSE INVOLVING
THE
AUTHOR’S
RIGHT TO PUBLIC PERFORMANCE
OR
OTHER COMMUNICATION
OF HIS WORK
WHEREAS, the
State recognizes that an effective intellectual and industrial property
system is vital to the development of domestic creativity, facilitates
transfer of technology, attracts foreign investments and ensures market
access for our products;
WHEREAS, the State
recognizes that the use of intellectual property bears a social
function
and to this end, the State shall promote the diffusion of knowledge and
information for the promotion of national development and progress and
the common good;
WHEREAS, it is the
policy of the State to enhance the enforcement of intellectual property
rights in the country; and, to protect and secure the exclusive rights
of artists and other gifted citizens to their intellectual property and
creations, particularly when beneficial to the people;
NOW, THEREFORE, pursuant
to the provisions of Republic Act No. 8293, otherwise known as the
Intellectual
Property Code of the Philippines, the following rules and regulations
on
settlement of disputes involving technology transfer payments and the
terms
of a license involving the author’s right to public performance or
other
communication of his work are hereby promulgated :
Section
1.
Definition of terms. Unless otherwise specified, the
following terms
shall have the meaning herein provided:
(a) “Author” means
the natural person who has created the work;
(b) “Bureau”
means the Documentation, Information and Technology Transfer Bureau of
the Intellectual Property Office;
(c) “Chief Mediator”
means the Officer within the Bureau who exercises immediate supervision
over the Mediation Officer. The title or official designation of
such officer may differ from the words “Chief Mediator” depending on
the
structure of the Office;
(d) “Communication
to the public” or “communicate to the public” means the
making
of a work available to the public by wire or wireless means in such a
way
that members of the public may access these works from a place and time
individually chosen by them;
(e) “Computer
software developed for mass market” shall mean computer software
that:
(i) is
produced,
made and marketed for a broad range of purposes and users including
end-users
and commercial users;
(ii) is
sold over
the counter or via standard delivery mechanisms;
(iii)
involves payments
that are not based on royalty;
(iv)
generally provides
for an indefinite term for the use of the software; and
(v)
does not
need any customization by the supplier or distributor.
(f) “Director General”
means the head of the Intellectual Property office;
(g) “Director”
means the Director of the Documentation, Information and Technology
Transfer
Bureau;
(h) “Intellectual
Property Rights” means:
1. Copyright
and
Related Rights;
2.
Trademarks and
Service Marks;
3.
Geographic Indications;
4.
Industrial Designs;
5.
Patents;
6.
Layout-Designs
[Topographies] of Integrated Circuits; and;
7.
Protection of
Undisclosed Information
(i) “IP Code”
means Republic Act No. 8293 otherwise known as the
Intellectual Property
Code of the Philippines;
(j) “Mediation
Officer” means the Officer within the Bureau authorized to exercise
the functions in these Regulations. The title or official
designation
of such officer may differ from the words “Mediation Officer” as the
structure
of the Office may be set;
(k) “Office” means
the Intellectual Property Office;
(l) “IPO
Gazette” means the Intellectual Property Office’s own
publication
where all matters required to be published under the IP Code shall be
published;
(m) “Public performance”
means (1) in case of a work other than an audiovisual
work,
the recitation, playing, dancing, acting or otherwise performing the
work,
either directly or by means of any device or process; (2) in the case
of
an audiovisual work, the showing of its images in sequence and the
making
of the sounds accompanying it audible; and (3) in the case of a sound
recording,
the act of making the recorded sounds audible at a place or at places
where
persons outside the normal circle of a family and that family’s closest
social acquaintances are or can be present, irrespective of whether
they
are or can be present at the same place and at the same time, or at
different
places and/or at different times, and where the performance can be
perceived
without the need for communication within the meaning of “communication
to the public” or “communicate to the public”.
(n) “Technology
Transfer Arrangements” shall mean contracts or agreements,
including
renewals thereof, involving the transfer of systematic knowledge for
the
manufacture of a product, the application of a process, or rendering of
a service including management contracts; and the transfer, assignment
or licensing of all forms of intellectual property rights, including
licensing
of computer software except computer software developed for mass
market.
The licensing of
copyright is considered a technology transfer arrangement only if it
involves
the transfer of systematic knowledge.
(o) “Undisclosed
Information” shall mean information
which:
(i)
is
secret in the sense that it
is
not, as a body or in the
precise
configuration and assembly of its
components,
generally known among or readily
accessible
to persons within the circles that
normally deal with the kind of
information
in question;
(ii)
has
commercial value because it is
secret;
and
(iii)
has been
subject to reasonable steps under the circumstances to keep
it secret, by the person lawfully in
control
of the information.
Section
2.
Original jurisdiction. –The Director General shall
exercise original
jurisdiction to resolve disputes relating to the terms of a license
involving
the author’s right to public performance or other communication of his
work.
Section
3.
Jurisdiction to settle disputes on royalties.
The Director
shall exercise quasi-judicial jurisdiction in the settlement of
disputes
between parties to a technology transfer arrangement arising from
technology
transfer payments, including the fixing of appropriate amount or rate
of
royalty.
Section
4.
Who may file a complaint. The aggrieved party
or his
duly authorized representative may file a verified complaint with the
Director
upon payment of the required filing fee. The verification
portion
of the complaint shall include a statement that to the best of his
knowledge,
the party commencing the action has not filed any other administrative
action or proceeding involving the same issue or issues before any
tribunal
or agency nor such action or proceeding is pending in other
quasi-judicial
bodies; provided, however, that if any such action is
pending,
the status of the same must be stated and should knowledge thereof be
acquired
after the filing of the complaint, the party concerned undertakes to
notify
the Office thereof within five (5) days from such knowledge.
Section
5.
Complaint format. The complaint shall be
typewritten
with the title reflecting the names of all the parties concerned and
shall
state the following:
(a)
Name and address of the complainant and the name and address of
the
respondent;
(b)
Nature of the complaint and a concise statement of
the
ultimate facts constituting the complaint; and
(c) The
relief or
reliefs prayed for.
Section
6.
Escrow. Should any party elect to avail of the
provisions
of the Civil Code of the Philippines on consignation with respect to
the
royalty or any sum of money that may be involved in the dispute, the
complainant
shall submit to the Bureau a certified copy of the Contract of
Escrow.
Section
7.
Mediation process. Within one (1) day from receipt of
the
complaint, the Bureau shall docket the complaint and the Chief Mediator
shall assign and transmit the same to a Mediation Officer, with
instructions
to mediate the case in accordance with these rules and
regulations.
Section
8.
Mediation conference. Within five (5) days from receipt of an
assignment, the Mediation Officer shall call the parties to a Mediation
Conference by sending each party a Notice of Settlement, under his own
signature or that of the Chief Mediator, stating the date and time of
the
conference. The Notice intended for the Respondent shall be
accompanied
by a copy of the complaint and its attachments.
Section
9.
Venue of the mediation conference. The Mediation
Conference
and any session thereof shall be held within the premises of the
Office.
However, upon written request and payment of the required fee, the
Director
may authorize that the Mediation Conference or any session thereof be
held
outside the premises of the Office provided that the same is necessary
and will enhance the proceedings and the other party, if the request
was
made by only one party, agrees thereto. The parties shall not
unreasonably
withhold their consent to such request. The total cost to hold
the
Mediation Conference or any session thereof outside the premises of the
Office, including air transportation, accommodation and per diem,
shall be borne by the party requesting; and, if the request was made by
all parties, the total cost shall be shared by them equally or in such
other proportion as they may state in their request.
Section
10.
Mediation period. During the Mediation
period, both
the complainant and the respondent shall be given the opportunity to
present
their respective positions and to submit the necessary documents to
support
their arguments. The Mediation Officer shall endeavor to settle the
case
within the Mediation Period which consists of thirty (30) days
counted
from the first day of the Mediation Conference.
Section
11.
Compromise/mediation agreement. If, during the
Mediation Period,
the parties agree to settle the case amicably, the Compromise/Mediation
Agreement shall be reduced into writing. If the parties request
in
writing, the Mediation Officer shall draft the
Compromise/Mediation
Agreement within ten (10) days from receipt of the request and payment
of the required fee. The Chief Mediator shall review the draft
within
ten (10) days from the submission by the Mediation Officer. The
parties
shall have ten (10) days from receipt of the draft from the Chief
Mediator
within which to review, finalize and execute the Compromise/Mediation
Agreement.
The parties shall submit the executed Compromise/Mediation Agreement to
the Director through the Chief Mediator by means of a Motion for
Judgment
Based on Compromise/Mediation Agreement. The Director shall
decide
said motion within thirty (30) days from receipt thereof.
Section
12.
Failure of the mediation conference. If the
case is
not settled within the Mediation Period, the Mediation Conference shall
be declared as a failure unless the parties request in writing to
extend
the same.
Section
13.
Decision in disputes involving technology transfer
payments.
In case of failure to settle a dispute involving technology
transfer
payments, the Mediation Officer shall, within ten (10) days after the
termination
of the Mediation Conference, submit to the Chief Mediator a report and
draft decision on the case, taking into account the evidences and
documents
presented by the parties. The Chief Mediator shall review the
draft
and submit his final recommendation and draft to the Director
within
twenty (20) days from termination of the Mediation Conference.
The
Director shall decide the case within thirty-five (35) days after the
termination
of the Mediation Conference.
Section
14.
Decision in disputes relating to author’s right to public
performance
or other communication of his work. Disputes relating to the terms
of a license involving the author’s right to public performance or
other
communication of his work shall follow the foregoing procedure
except
that, instead of deciding the case, the Director shall submit his
findings,
conclusions, recommendations and draft decision to the Director General
who shall render the final decision in the dispute.
Section
15.
Appeal to the Director General. The decision or final
order
of the Director shall become final and executory fifteen (15) days
after
receipt of a copy thereof by the appellant unless within the said
period,
a motion for reconsideration is filed with the Director or an appeal to
the Director General has been perfected by filing a notice of appeal
and
payment of the required fee.
Only one motion for
reconsideration of the decision or order of the Director shall be
allowed.
Section 16. Appellant’s
brief required. The appellant shall, within one (1) month
from
the date of filing of the notice of appeal, file a brief of the
authorities
and arguments on which he relies to maintain his appeal. On
failure
to file the brief within the time allowed, the appeal shall stand
dismissed.
Section
17.
Director’s comment. The Director shall submit his
comments
on the appellant’s brief within one (1) month from receipt of the order
of the Director General requiring him to comment.
Section
18.
Appeal to the Secretary of Trade and Industry. The
decision
of the Director General shall be final and executory fifteen (15) days
after receipt of a copy thereof by the appellant unless an appeal to
the
Secretary of the Department of Trade and Industry is perfected by
filing a notice of appeal and payment of the required fee. No
motion
for reconsideration of the decision or order of the Director General
shall
be allowed.
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